Order Regarding Withdrawal and Substitution of Counsel IPR2015-00921


Takeaway: Counsel may not withdraw from a proceeding unless the Board authorizes such withdrawal, and a motion seeking withdrawal may only be filed after obtaining the Board’s authorization to file such a motion.

In its Order, the Board ordered Patent Owner’s Substitute Power of Attorney be expunged from the record and authorized Patent Owner to file a Motion for Withdrawal and Substitution of Counsel. Continue reading

Denying Motion to Dismiss Petition IPR2015-00519


Takeaway: Under the Board’s rules governing inter partes proceedings, the petition and supporting papers must be served on the patent owner at the current correspondence address of record for the subject patent. If the papers are timely served on patent owner’s litigation counsel instead, the Board may—but is not required to—waive the requirement where the patent owner’s ability to respond to the petition is not “affected meaningfully.”

In its Decision, the Board denied “Patent Owner’s Motion To Deny The Petition A Filing Date For Failure To Serve The Patent Owner At The Correspondence Address Of Record And To Dismiss The Petition For Failure To File The Petition Within One Year After Service Of A Complaint For Patent Infringement.” Continue reading

Denying Motion for Pro Hac Vice Admission IPR2014-01002


Takeaway: The Board will deny pro hac vice admission if the motion and accompanying declaration do not provide sufficient evidence that the attorney has experience litigating patent cases, has a familiarity with the technical subject matter at issue, and has reviewed the patent-at-issue.

In its Decision, the Board denied Patent Owner’s motion for pro hac vice admission of Thomas E. Lynch, III. Patent Owner asserted that there is good cause for his pro hac vice admission at least because he (1) “is an experienced litigating attorney” whose practice has included environmental and business-related litigation, and (2) “has an established familiarity with the subject matter” of this proceeding. In opposition, Petitioner argued that Patent Owner had not provided sufficient evidence that Mr. Lynch was familiar with the technical subject matter at issue in this proceeding or has reviewed the patent-at-issue. The Board agreed that Patent Owner was too vague on Mr. Lynch’s experience in litigating patent cases and his familiarity with this particular patent-at-issue. Accordingly, the Board determined that Mr. Lynch had not established sufficient legal and technical qualifications to represent Patent Owner in the proceeding, and that the criteria for pro hac vice admission had not been satisfied. However, the Board did authorize Patent Owner to file a revised motion , if it desires. Continue reading

Addressing Contact with a Witness IPR2014-00697


Takeaway: Although counsel’s contact with a witness that is represented by counsel may not be proper, if no testimony from that witness has yet been filed in the proceeding, such contact may be irrelevant.

In its Order, the Board addressed an issue raised during a conference call requested by Petitioner related to Patent Owner’s contact with a witness. Petitioner alleged that counsel for Patent Owner contacted Mr. John Prymak without ascertaining whether he was represented by counsel, and asked substantive questions related to prior art that was at issue.  Petitioner argued that the contact was improper and requested authorization to file a declaration of Mr. Prymak “to address the information Patent Owner elicited from Mr. Prymak concerning the Hazzard reference.” Continue reading

Expungement of Unauthorized Motion to Withdraw as Counsel IPR2014-01523


Takeaway: Under 37 C.F.R. § 42.10(e), counsel may withdraw from an inter partes review proceeding only with prior authorization from the Board.

In its Order, the Board – sua sponte – ordered that Patent Owner’s Motion to Withdraw be expunged from the record.  According to the Board, the Motion was improperly filed.  Thus, counsel for Patent Owner will remain the same until further developments so dictate. Continue reading

Order Vacating Due Dates IPR2014-00369


Takeaway: The AIA does not provide for “replacement” of a party to a proceeding. Therefore, if a patent owner assigns the challenged patent and stops participating in the proceeding, the Board may proceed directly to the final written decision without further input from the parties.

In its Order, the Board vacated Due Dates 2-7 of the Scheduling Order and determined that the case is ready for final decision following notice by Patent Owner’s counsel that Patent Owner assigned the challenged patent to a third party and would take no further action in the case, unless required by the Board. Continue reading

Granting Motion to Seal IPR2014-00216


Takeaway: If a party is attempting to modify the default protective order, it must show good cause for doing so, including the inclusion of heightened restrictions on who can view the information.

In its Decision, the Board granted Patent Owner’s Motion to Seal. Patent Owner’s Motion proposed sealing certain evidence in support of its Motion to Amend.  It also proposed the entry of a protective order that differs from the default protective order by creating a special class of confidential information marked “Attorney’s Eyes Only” that would only be available to the opposing party’s outside counsel and experts.  Petitioner did not contest the designation of information as confidential, but argued that it should be subject to the standard protections, not to the heightened “Attorney’s Eyes Only” protection. Continue reading

Authorizing Opposition to Motion to Exclude IPR2013-00535


Takeaway: A party may still have an opportunity to present supporting evidence to oppose a motion to exclude, even if supplemental evidence was not filed in response to the moving party’s objections to the evidence that is subject to the motion to exclude.

In its Order, the Board authorized Petitioner to file an Opposition to Patent Owner’s Motion to Exclude, including appropriate supporting evidence. The Board also indicated that no authorization was needed for Patent Owner to substitute its back-up counsel, which requires only the filing of updated mandatory notices.  The Board also clarified how the oral hearings would proceed in the three related inter partes review proceedings. Continue reading

Denying Motion for Leave to File Motion for Sanctions Regarding Deposition Conduct CBM2014-00008


Takeaway: Deposition transcripts must be filed as exhibits, not papers.

In its Order, the Board indicated that the parties were not authorized to file any motions for sanctions at the present time. Also, the Board ordered that certain papers be expunged from the record and refiled by the Board as exhibits.

Patent Owner had requested a conference call seeking authorization to file a motion for sanctions under 37 C.F.R. § 42.12. Patent Owner’s alleged misconduct by Petitioner during the deposition of Patent Owner’s declarant, Mr. John Nerenberg. It was Patent Owner’s position that “Petitioner’s cross-examination of Mr. Nerenberg went beyond the scope of his direct testimony in violation of 37 C.F.R. § 42.53(d)(5)(ii).” In particular, “Patent Owner argued that Petitioner’s

questions were directed to the issue of enablement under 35 U.S.C. § 112 and designed to elicit testimony that could be used to support a second petition for covered business method patent review, which Petitioner had informed the district court in the related infringement case between the parties that it would be filing soon.” Patent Owner’s proposed motion for sanctions sought to strike certain pages of Mr. Nerenberg’s deposition transcript.

The Board was not persuaded that a motion for sanctions was warranted, at least because: Petitioner had agreed that it would not use the referenced portions of the deposition transcript in a second covered business method patent petition; Patent Owner had only objected to many, but not all, of Petitioner’s questions; and Patent Owner had not sufficiently explained why the particular improper questions would warrant striking pages of the deposition transcript.

On a related point, Petitioner argued that if its actions at Mr. Nerenberg’s deposition constituted misconduct, then Patent Owner’s asking Mr. Jeff Parmet (Petitioner’s declarant) questions about who was paying his fees, and how much he was being paid, at Mr. Parmet’s deposition was equally improper. Nonetheless, the Board denied Petitioner’s request to file a motion for sanctions as well, because, for example, Petitioner had not objected to Patent Owner’s questions during the deposition.

The Board noted that Petitioner had filed the deposition transcripts of Mr. Parmet and Mr. Nerenberg as papers, but that “[d]eposition transcripts must be filed as exhibits, not papers.” See 37 C.F.R. § 42.53(f)(7). Accordingly, the Board indicated that it would expunge and refiled the exhibits in question.

The Board also noted that Patent Owner’s email to the Board requesting a conference call, and Petitioner’s email in response, were improper because they each “contained lengthy arguments explaining the party’s position, citations to the record, and accusations against the other party.” To the contrary, each “email requesting a conference call should copy the other party, indicate generally the relief being requested or the subject matter of the conference call, state whether the opposing party opposes the request, and include multiple times when all parties are available.” The Board went on to note that such emails “may not contain substantive argument and, unless otherwise authorized, may not include attachments.”

Westlake Services, LLC d/b/a Westlake Financial Services v. Credit Acceptance Corp., CBM2014-00008
Paper 48: Order on Conduct of the Proceeding
Dated: August 12, 2014
Patent 6,950,807 B2
Before: Justin T. Arbes, David C. McKone, and Gregg I. Anderson
Written by: Arbes

Denying Authorization to File a Motion to Disqualify, Motion to Present Live Demo, and Motion to Expunge Exhibit CBM2014-00131; CBM2014-00133; CBM2014-00135; CBM2014-00136; CBM2014-00137


Takeaway: A live demo may not be authorized to accompany a preliminary response because it is akin to new testimony.

In its Order, the Board addressed three separate issues. First, the Board declined to authorize Petitioner to file a motion to disqualify Patent Owner’s counsel or a motion for additional discovery related to the motion to disqualify. Second, the Board declined to authorize Patent Owner to present a live demo in support of its Preliminary Response. Third, the Board declined to authorize Petitioner to file a motion to expunge Exhibit 1006. Continue reading